by Josh Nightingale | Jun 13, 2023 | Federal Circuit
By Adam J. Cook* and Josh Nightingale – Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR...
by Josh Nightingale | May 5, 2023 | Estoppel, Federal Circuit
By Josh Nightingale – Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on grounds that were...
by Josh Nightingale | Mar 3, 2023 | Expert Witnesses, Motions Practice
By Ryan Mueller, Sachin Patel, and Josh Nightingale – The PTAB recently granted a joint request to expunge an exhibit and contemporaneously denied the Patent Owner’s request for authorization to file a Motion for Leave to Submit the same exhibit in Bausch &...
by Josh Nightingale | Feb 28, 2023 | Petitions, PGR, Trial Institution
By Ashvi Patel and Josh Nightingale – Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one...
by Josh Nightingale | Dec 5, 2022 | Estoppel, PTAB News
By Dhohyung Kim and Josh Nightingale – On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...
